Prestige Cosmetics

Trademark Trial and Appeal Board

Sep 23, 2008

No. 76684117 (T.T.A.B. Sep. 23, 2008)

Mailed: September 23, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Prestige Cosmetics
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Serial No. 76684117
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Myron Amer, Esq. for Prestige Cosmetics.

Melissa C. Vallillo, Trademark Examining Attorney, Law
Office 114 (Odette Bonnet, Managing Attorney).
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Before Walters, Grendel and Bergsman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Prestige Cosmetics has filed an application to register
the standard character mark SKIN LOVING MINERALS on the
Principal Register for “color cosmetics for the eyes, not
including gels and powders,” in International Class 3.1 The
application includes a disclaimer of MINERALS apart from the
mark as a whole.

1 Serial No. 76684117, filed November 16, 2007, based on use of the mark
in commerce, alleging first use and use in commerce as of September 1,
2007.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 76684117

2
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the standard character mark SKIN LOVING COLORS2 previously
registered in connection with the goods identified below
that, if used on or in connection with applicant’s goods, it
would be likely to cause confusion or mistake or to deceive.
Registration No. 2743695 [Registered July 29,
2003]
Disclaimer: SKIN and COLORS
Goods: “Perfume, toilet water; gels for the bath
and the shower not for medical purposes, salts
for the bath and the shower not for medical
purposes; toilet soaps, body deodorants;
cosmetics, namely creams, milks, lotions, gels
and powders for the face, the body and the hands;
self-tanning milk, pre-sunning milk, after sun
moisturizer, anti-wrinkle creams, total
sunscreen, high protection sun tanning
preparations, and moisturizing tanning milk;
make-up preparations; essential oils for personal
use,” in International Class 3.

Registration No. 2839808 [Registered May 11,
2004]
Disclaimer: COLORS
Goods: “cosmetics, namely, pressed powders,
liquid foundation, lipsticks, lip gloss, eye
shadow, and blush,” in International Class 3.

Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of

2 Both registrations are owned by Biotherm.
Serial No. 76684117

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confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
Considering, first, the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
Serial No. 76684117

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American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein; and Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
The examining attorney contends that applicant’s
identified goods are encompassed within the broadly worded
identification of goods in Registration No. 2743695, arguing
that “make-up preparations” includes color cosmetics for the
eyes. In support of this contention, the examining attorney
submitted a definition from The American Heritage Dictionary
of the English Language of “makeup” as “cosmetics applied
especially to the face.” Additionally, the examining
attorney submitted excerpts from Internet websites of
Clinique, Sephora, Estee Lauder and Prescriptives to
Serial No. 76684117

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demonstrate that “makeup” retailers and manufacturers
include eye cosmetics among their “makeup” products. The
examining attorney contends, further, that the cited
Registration No. 2839780 includes “eye shadow,” which is a
type of “eye cosmetic” and, thus, these goods are
overlapping. The examining attorney contends that
applicant’s identified goods are similar to the remaining
goods in the cited registrations because they are all types
of makeup or cosmetic products, stating that the evidence
noted above shows the same entities selling various cosmetic
products under the same mark.
Applicant argues, without further explanation, that its
goods and the goods in the cited registrations “are
distinctly different and travel through different channels
of trade to the ultimate consumer” (brief, p. 2). Applicant
states that registrant was required to apply for the cited
‘780 registration because the ‘695 registration did not
cover the same goods, implying, perhaps, that these
differences are relevant to determining what if any
relationship exists between applicant’s identified goods and
those identified in the registrations. In its reply brief,
applicant appears to argue that the respective goods are
different because applicant has excluded color eye cosmetics
made of gels or powders.
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The evidence establishes that “makeup” is synonymous
with, or a subset of, “cosmetics”; and that several
cosmetics companies offer for sale and market all types of
cosmetics under the same marks. As the examining attorney
correctly notes (unnumbered p. 8) and as the evidence shows:
[U]nder “Makeup,” Sephora includes a number of eye
cosmetics such as mascara, eye shadow and eye
liner. Similarly, Clinique features makeup such
as cream eye shadow, base for the eyes and eye
shimmer tint. As yet another example, Estee
Lauder lists eye cosmetics such as eye liners and
eye shadow among its makeup products. Lastly,
Prescriptives lists mascara, eye color and eye
liner among its makeup products.

Cited Registration No. 2743695 includes “makeup
preparations,” which clearly encompasses applicant’s “color
cosmetics for the eyes”; and Registration No. 2839808
includes “cosmetics, namely, … eye shadow …,” which is
clearly identical to “color cosmetics for the eyes.” To
this extent, applicant’s goods are identical to those of the
cited registrations. In view of the evidence of record,
applicant’s goods are also closely related to the other
cosmetics and items identified in the cited registrations.
As the examining attorney correctly notes in her brief
(unnumbered p. 9) and the evidence shows:
Sephora provides lip gloss, foundation, eye shadow
and mascara. Clinique also provides lip gloss,
foundation and blushers. Estee Lauder provides
blush, lipsticks, lip gloss and foundation.
Lastly, Prescriptives provides foundation,
lipsticks and lip gloss.

Serial No. 76684117

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While some of the goods identified in the registrations
are “pressed powders” and “gels and powders for the face,”
applicant’s exclusion of gel and powder eye cosmetics from
its identification of goods is not sufficient to distinguish
the goods. The evidence establishes that these goods,
whether gels, powders or liquids, are sold under the same
marks and, thus, are closely related, if not identical in
part.
Further, inasmuch as the identifications of goods in
both the involved application and the cited registrations
are not limited to any specific channels of trade, we
presume an overlap and that the goods would be offered in
all ordinary trade channels for these goods and to all
normal classes of purchasers. See In re Linkvest S.A., 24
USPQ2d 1716 (TTAB 1992). In other words, the trade channels
and purchasers are likely to be the same. Additionally,
both applicant's and registrant’s goods may be purchased by
members of the general public.
Considering, next, the marks, we note that in
determining likelihood of confusion, a lesser degree of
similarity between two marks is required when the marks are
applied to identical goods or services. HRL Associates,
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990). See
also In re J.M. Originals, 6 USPQ 1393 (1987). The question
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is whether applicant’s mark and the registered mark, when
viewed in their entireties, are similar in terms of
appearance, sound, connotation and commercial impression.
The test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall
commercial impressions that confusion as to the source of
the goods or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be considered
in their entireties, it is well settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
The examining attorney contends that because both
applicant’s and registrant’s marks contain the dominant
phrase “Skin Loving” followed by merely descriptive and
disclaimed wording, the marks convey similar commercial
impressions. Applicant contends only that the words
“Minerals” and “Colors” adequately distinguish the marks,
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noting that the disclaimer of each of these terms in the
respective marks does not change the appearance of each
mark.
Applicant is correct that the disclaimers do not change
the appearances of the respective marks and, obviously, the
marks do differ visually and aurally to the extent that
applicant’s mark ends with the word “Minerals” and the
registered mark ends with the word “Colors.” However, while
we must consider the marks in their entireties, we agree
with the examining attorney that the first and identical
phrase in each mark, “Skin Loving,” is the dominant portion
of each mark. Both “Minerals” and “Colors” are merely
descriptive in connection with the identified goods in the
application and registrations and they are the last words in
the respective marks. As such, they are of less
significance in determining the overall commercial
impressions of the marks. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845-45 (Fed. Cir.
2000). Because the first and dominant part of applicant’s
mark, SKIN LOVING MINERALS, is identical to the first and
dominant part of the mark in the cited registrations, SKIN
LOVING COLORS, consumers may believe that applicant’s
products are simply a variation of the registrant’s product
line. Accordingly, when we consider each mark as a whole,
we consider them to be more similar than dissimilar.
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When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that in view of the similarity
in the commercial impressions of applicant’s mark, SKIN
LOVING MINERALS, and registrant’s mark, SKIN LOVING COLORS,
their contemporaneous use on the overlapping and closely
related goods involved in this case is likely to cause
confusion as to the source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.